Tag Archives: attorney-client privilege

Federal Circuit Recognizes Patent Agent Privilege

by: Robert Wagner, intellectual property attorney at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C. ()

Federal CircuitThe Federal Circuit recently decided an interesting case about whether there should be a patent agent-client privilege. In In re: Queen’s University at Kingston (Case No. 14-145), the Federal Circuit concluded that there should be such a privilege in a 2-1 decision written by Judge O’Malley (Judge Lourie joined the decision, and Judge Reyna dissented).

Background

Queen’s University in Kingston, Ontario, Canada filed a patent infringement lawsuit against Samsung Electronics Co., Ltd. in the Eastern District of Texas. During discovery, Samsung sought to discovery certain communications between Queen’s University employees and its registered patent agents. The district court granted a motion to compel, finding, in part, that there was no patent agent privilege. Queen’s University filed a petition for writ of mandamus with the Federal Circuit challenging the order.

Analysis

The Federal Circuit first determined that its law, and not the law of the regional circuits or state law should apply to determine whether a patent agent privilege might exist because the issue relates to patent-specific subject matter. It also noted that the issue was one of first impression at the Federal Circuit, but was one where there is conflicting authority at the district court level.

The Court then decided that it was appropriate to consider the writ given that once the documents were produced, there would be no easy way to undo the damage if a privilege existed. The Court also noted that the district court split on the subject favored it providing some clarity on the issue. The Federal Circuit then turned to the issue of whether it should recognize a patent agent privilege.

The Court found that Rule 501 of the Federal Rules of Evidence authorizes federal courts, in appropriate circumstances, to recognize new privileges. It further noted that it did so with some caution, as privileges restrict the flow of information and should not be created lightly.

The Court then looked to the Supreme Court’s decision in Sperry v. State of Florida ex rel. Florida Bar, 373 U.S. 379 (1963), in which the Supreme Court recognized that patent agents perform acts that constitute the practice of law and that the regulation of patent agents is solely governed by the US Patent and Trademark Office.

In looking at the Supreme Court’s analysis in that case, the Court traced the history of patent agents and the nature of their work before concluding that a limited patent agent privilege is appropriate.

The Court next turned to what the scope of that privilege should be. Not all communications with a patent agent can be privileged.

Communications between non-attorney patent agents and their clients that are in furtherance of the performance of these tasks, or “which are reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the Office involving a patent application or patent in which the practitioner is authorized to participate” receive the benefit of the patent-agent privilege.
Communications that are not reasonably necessary and incident to the prosecution of patents before the Patent Office fall outside the scope of the patent-agent privilege. For instance, communications with a patent agent who is offering an opinion on the validity of another party’s patent in contemplation of litigation or for the sale or purchase of a patent, or on infringement, are not “reasonably necessary and incident to the preparation and prosecution of patent applications or other proceeding before the Office.”

Based on the recognition of this new privilege, the Court grant the petition for a writ of mandamus, vacated the district court’s order on the motion to compel, and remanded for further consideration.

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Federal Court Orders Defendants to Add Metadata to Privilege Log

by: Kelly A. Williams, a partner at Picadio Sneath Miller & Norton, P.C.

Parties to litigation are used to providing privilege logs (a list of documents not produced in discovery on the grounds that the documents contain privileged information) with such information as author, recipient, date, description of the document and the privilege being asserted.  Now that electronic documents are becoming the “norm,” the courts may begin requiring more information about these documents.  Once such case is Favors v. Cuomo, a redistricting case in filed in the Eastern District of New York.  In this case, the court ordered defendants to supplement their privilege log to include “addressee(s), copyee(s), blind copyee(s), date, time, subject line, file name, file format, and a description of any attachments.”  Favors v. Cuomo, 11-CV-5632, 2012 U.S. Dist. LEXIS 113076, *116 (E.D.N.Y. Aug. 10, 2012) (U.S. Mag. J. Roanne L. Mann).  The rationale for this ruling was that this type of information is easily and readily accessible given the metadata available for electronic documents.  Id.  However, the court did add that merely listing the subject line, file name or document title would be insufficient as it would result in “vague, confusing, or conclusory descriptions.”  Id. at *117 n.36.  Thus, this type of information would have to be revised to provide a sufficient description of the document.

Discovery of Facebook Accounts

by: Robert Wagner, intellectual property attorney at Picadio Sneath Miller & Norton, P.C. ()

With the incredible rise of social networking websites (an estimated half of Americans use these sites), litigators are beginning in earnest to seek discovery of parties’ social networking accounts and postings (such as Facebook, LinkedIn, MySpace, Twitter). Frequently, statements made or photographs shown on a person’s “wall” or page made be relevant to issues in a lawsuit. For example, in a personal injury action where a plaintiff claims to be disabled or physically restricted because of an accident, a photograph showing the plaintiff engaged in a physical activity after the injury, such as skiing or running, may shed light on the true extent of his or her injuries. Litigators want to obtain access to these social networking sites as part of the discovery process.

The question facing Courts is whether to allow such access and, if so, are there limits on what must be revealed. Senior Judge R. Stanton Wettick, Jr. of the Court of Common Pleas of Allegheny County (which includes Pittsburgh) recently issued an opinion where he extensively discusses the case law surrounding when a litigant is entitled to access an individual’s social networking site and what must be produced if it is. Because Judge Wettick handles most discovery disputes in Allegheny County, this decision is particularly important for practitioners in Pittsburgh and Pennsylvania state courts.

In his opinion, he notes that information from an individual’s social networking site is not protected by any privileges, either because there is no basis for the privilege or it has been waived by sharing the information with others. Despite that, he concludes that the information is not per se discoverable. Rather, the party seeking the discovery must make some threshold showing that there is likely to be relevant information on the social network site before it is entitled to discovery. He concludes that such a test adequately balances the need for relevant discovery with the intrusion of giving access to a great deal of personal information that is unrelated to the issues in the lawsuit.

Scary Decisis?

Posted by Henry M. Sneath, a principal and shareholder at Picadio Sneath Miller & Norton, P.C. in Pittsburgh, Pa.

Here’s a scary decision by a California Appellate Court reported on Wired.com http://www.wired.com/threatlevel/2011/01/email-attorney-client-privilege/.  An employee who sues her employer for discrimination, and who communicates with her lawyer using her employer’s e-mail system, waives the attorney client privilege by using the company’s e-mail system to seek or receive legal advice from her lawyer.  In other words, if you sue your employer, you may not use that employer’s e-mail server to communicate with your lawyer, or those communications are not privileged. This is an important issue not only to litigants, but to lawyers, who routinely send litigation related e-mails to clients at workplace e-mail addresses. Lawyers must now, perhaps, ask clients a series of questions regarding the process of e-mail communications so that a privileged system of communication can be established. Wired.com quotes the court as holding that “The e-mails sent via company computer under the circumstances of this case were akin to consulting her lawyer in her employer’s conference room, in a loud voice, with the door open, so that any reasonable person would expect that their discussion of her complaints about her employer would be overheard.”  The key to the decision involves the explicit warnings given to plaintiff and her fellow employees about the use of company e-mail. The court’s holding cited the following rationale for its decision to vitiate the privilege: “This is so because Holmes used a computer of defendant company to send the e-mails even though (1) she had been told of the company’s policy that its computers were to be used only for company business and that employees were prohibited from using them to send or receive personal e-mail, (2) she had been warned that the company would monitor its computers for compliance with this company policy and thus might “inspect all files and messages . . . at any time,” and (3) she had been explicitly advised that employees using company computers to create or maintain personal information or messages “have no right of privacy with respect to that information or message.” See the Courts Published Opinion: http://www.courtinfo.ca.gov/opinions/documents/C059133.PDF

Whether the California decision will be followed elsewhere, or copied in other state or federal courts remains to be seen. We at PitIPtechblog will continue to monitor this decision and its fallout.